J. Mitra & Co Pvt Ltd v Assistant Controller of Patents & Designs (2008)

Summary

“This matter is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005.” (para 3) “Span Diagnostics Limited, respondent No.3 herein”, had opposed the appellant’s patent application of “14.6.2000”, which “stood notified by the Patent Office on 20.11.2004” (para 5), and “At that time appeals against decisions made by the Controller pertaining to ‘pre-grant oppositions’ under Section 25 were maintainable before the High Court under Section 116(2) of the Indian Patents Act, 1970.” (para 6) “on 23.8.06 the Controller rejected its ‘pre-grant opposition’” and “The patent was granted to the appellant on 22.9.06.” (para 18) “On 19.10.2006 when FAO No.293/06 was filed in the High Court, Chapter XIX of the parent Act as amended vide Patents (Amendment) Act, 1999 continued to be in operation notwithstanding the enactment of the Patents (Amendment) Act, 2002 and the Patents (Amendment) Act, 2005 as the amended Sections 116 and 117A were brought into force only vide Notification dated 2.4.07.” (para 16) “The question which arises for determination in this batch of civil appeals is : whether FAO No.292/06 and FAO No.293/06 filed by respondent no.3 herein in the High Court were liable to be dismissed.” (para 18)

The Bench held that “An Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation.” (para 21), that “by Patents (Amendment) Act, 2005 for the first time a dichotomy was inserted in the Patent Law” between “‘opposition to pre-grant’” and “‘opposition to post-grant’ of patent” (para 22), and that although “The Legislature intended to obliterate appeal from ‘pre-grant proceedings’, which existed earlier”, “For some unknown reasons, the amended Sections 116 and 117A(2) were not brought into force till 2.4.07” and “This is where the legislative intent got defeated during the interregnum.” (para 23) “Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time”, the first appeals “would remain in the High Court” and “would be heard and disposed of by the High Court in accordance with law under Section 116 of the said 1970 Act as it stood on 19.10.06.” (para 24) “Accordingly, the two Civil Appeals, filed by the appellant herein, stand disposed of with no order as to costs.” (para 25)

What the court decided

1. Commencement of an Act. “Quite often the commencement of an Act is postponed to some specified future date or to such date as the Appropriate Government may, by Notification in the Official Gazette, appoint. Provision is also at times made for appointment of different dates for coming into force of different parts of the same Act.” (para 20) “An Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation.” (paras 20–21)
2. The dichotomy of 2005. “Applying the above tests to the present case, we find that by Patents (Amendment) Act, 2005 for the first time a dichotomy was inserted in the Patent Law by providing vide Section 25(1) for ‘opposition to pre-grant’ and vide Section 25 (2) for ‘opposition to post-grant’ of patent. By reason of Patents (Amendment) Act, 2005, the kind of opposition available under the said 1970 Act is different from what existed earlier. Previously, there was no ‘post-grant opposition’.” (para 22)
3. The rule of caution. “Previously, the only provision of challenge by an interested party was a ‘pre-grant’ challenge under Section 25 (1) as it then stood. Therefore, the Courts had evolved the ‘rule of caution’ as the patent had not faced any challenge at the hands of interested parties. There is, however, a radical shift due to incorporation of Section 25(2) where an interested party is granted the right to challenge the patent after its grant.” (para 22)
4. Section 25(1) and Section 25(2). “The ground of challenge under Section 25(1) is identical to Section 25(2) of the said 1970 Act. However, Section 25(1) is wider than Section 25(2) as the latter is available only to a ‘person aggrieved’. The main difference between Section 25(1) and Section 25(2), as brought about by Patents (Amendment) Act, 2005, is that even after a patent is granted, ‘post-grant opposition’ can be filed under Section 25 (2) for a period of one year. The reason is obvious. In relation to patents that are of recent origin, a higher scrutiny is necessary. This is the main rationale underlying Section 25(2) of the said 1970 Act.” (para 22)
5. One statutory appeal. “Therefore, the Legislature intended an appeal under Section 117A(2) to the Appellate Board from any decision, order or direction of the Controller, inter alia, under Section 25(4)” (para 22). “In the present case, the Legislature intended to provide for two types of scrutiny followed by one statutory appeal to the Appellate Board against ‘post-grant proceedings’.” “The Legislature intended to obliterate appeal from ‘pre-grant proceedings’, which existed earlier. However, it was left to the Executive to bring the enacted law into force vide notification.” (paras 22–23)
6. The interregnum. “The Legislature intended to provide for only one statutory appeal to the Appellate Board but by not bringing Section 61 into force till 2.4.07, appeals filed during the interregnum, as in this case, became vulnerable and liable to be dismissed as misconceived as is contended by the appellant.” (para 15) “For some unknown reasons, the amended Sections 116 and 117A(2) were not brought into force till 2.4.07 whereas the concept of ‘pre-grant’ and ‘post-grant’ oppositions were brought into force w.e.f.1.1.2005. This is where the legislative intent got defeated during the interregnum.” (paras 15, 23)
7. The law on 19 October 2006. “It is during this interregnum that respondent no.3 filed its FAO No.293/06 in the High Court under Section 116, as it stood on 19.10.06 under the Patents (Amendment) Act, 1999. On that date, the amended Section 117A, suggested by Patents (Amendment) Act, 2005, was not brought into force. On 19.10.06 the old law prevailed under which an appeal lay before the High Court.” (para 23)
8. Section 117G and transfer. “On reading amended Section 117G it becomes clear that all appeals against any order or decision of the Controller had to be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette. This amended Section 117G was also brought into force vide Notification dated 3.4.2007.” (para 17)
9. The Appellate Board’s jurisdiction. “The Appellate Board after 2.4.07 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4), i.e., in cases of orders passed in ‘post-grant opposition’. Therefore, there is no point in transferring the pending FAO No.292/06 and FAO No.293/06 to the Appellate Board which has no authority to decide matters concerning ‘pre-grant opposition’.” (para 24)
10. Disposition. “Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time, we are of the view that the first appeals, filed by respondent no.3 in the High Court being FAO No.292/06 and FAO No.293/06, would remain in the High Court. The said appeals would be heard and disposed of by the High Court in accordance with law under Section 116 of the said 1970 Act as it stood on 19.10.06. The High Court will hear and decide the validity of the Order passed by the Controller dated 23.8.06 rejecting ‘pre-grant opposition’ filed by respondent no.3.” (para 24) “Accordingly, the two Civil Appeals, filed by the appellant herein, stand disposed of with no order as to costs.” (paras 24–25)

Subsequent treatment

• Explained — In UCB Farchim v Cipla (2010) the Delhi High Court held that “the observation in J. Mitra in para 24 that ’the Appellate Board after 2nd April 2007 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4) i.e. in cases of orders passed in post-grant opposition’ has to be understood in the context of that case where the Court was only considering whether against the rejection of a pre-grant opposition an appeal lay to the High Court or to the IPAB.” (para 22)
• Explained — In Glochem Industries v Cadila Healthcare (2009) the Bombay High Court held that “the law as it operates after the amendment has come into force is that it provides only one remedy of statutory appeal against the post-grant order. The ratio of this decision does not take the matter any further.” (para 14)
• Followed — In Pharmacyclics v Union of India (2019) the Delhi High Court relied on this judgment for the scheme of pre-grant and post-grant opposition (para 19).